How does a joint research agreement affect patent examination under pre-AIA 35 U.S.C. 103(c)?

A joint research agreement can have significant effects on patent examination under pre-AIA 35 U.S.C. 103(c). The MPEP provides an example:

“Employee B’s invention claimed in his application was made after the joint research agreement was entered into, and it was made as a result of activities undertaken within the scope of the joint agreement. Employee B’s application discloses assignees I and J as the parties to the joint research agreement.“

In such cases, a provisional 35 U.S.C. 103(a) rejection based on provisional prior art under pre-AIA 35 U.S.C. 102(e) cannot be made if evidence of the joint research agreement is filed. However, a provisional double patenting rejection may still be made.

To learn more:

• joint research agreement
• pre-AIA 35 U.S.C. 103(c)
• patent examination
• prior art disqualification